Google LLC v. Marcell Attila Kiss
Claim Number: FA1710001755058
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan. Respondent is Marcell Attila Kiss (“Respondent”), Hungary.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubeplaylist-mp3.com>, registered with DotRoll Kft.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2017; the Forum received payment on October 23, 2017.
On October 24, 2017, DotRoll Kft. confirmed by e-mail to the Forum that the <youtubeplaylist-mp3.com> domain name is registered with DotRoll Kft. and that Respondent is the current registrant of the name. DotRoll Kft. has verified that Respondent is bound by the DotRoll Kft. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@youtubeplaylist-mp3.com. Also on October 24, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s YOUTUBE mark is used for the leading online video sharing site, <youtube.com>, with more than one billion users around the world. Complainant registered the YOUTUBE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,525,802, registered Oct. 28, 2008). See Compl. Annex 10. Additionally, Complainant registered the YOUTUBE mark with government trademark agencies throughout North and South America, Europe, Asia, Australia, and Africa. Id. Respondent’s <youtubeplaylist-mp3.com> is confusingly similar to Complainant’s mark because it incorporates the entire mark, adding the generic or descriptive terms “Playlist-mp3” and the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <youtubeplaylist-mp3.com> domain name. There is no evidence in the WHOIS information to suggest that Respondent is known by the <youtubeplaylist-mp3.com> domain name. Additionally, Respondent has never received any authorization, or license from Complainant to use the YOUTUBE mark. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s domain name diverts internet users to a service that is in direct violation of Complainant’s “Terms of Service,” which expressly prohibits the downloading and saving of content from the YouTube website. See Compl. Annexes 11–12.
Respondent registered and continues to use <youtubeplaylist-mp3.com> in bad faith. The disputed domain name disrupts Complainant’s business by directing internet users to Respondent’s competing website, offering pay-for-download services in violation of Complainant’s “Terms of Service.” Respondent is using <youtubeplaylist-mp3.com> to intentionally attempt to attract internet users for commercial gain to a website offering related services, thereby creating confusion as to Respondent’s affiliation with Complainant. Respondent registered <youtubeplaylist-mp3.com> with actual knowledge of Complainant’s rights to the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <youtubeplaylist-mp3.com> on August 23, 2012.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in the disputed domain name; and that Respondent has proceeded in bad faith use and registration of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain name, <youtubeplaylist-mp3.com>, is confusingly similar to Complainant’s valid and subsisting trademark, YOUTUBE. Complainant has adequately plead its interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic words “play,” “list,” a hyphen, “mp3,” and the g TLD “.com.” This fails to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has not permission, authority or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s domain name diverts internet users to a service that is in direct violation of Complainant’s “Terms of Service,” which expressly prohibits the downloading and saving of content from the YouTube website. See Compl. Annexes 11–12.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant contends that the disputed domain name disrupts Complainant’s business by directing internet users to Respondent’s competing website, offering pay-for-download services in violation of Complainant’s “Terms of Service.” See Compl. Annexes 11–12. The use of a disputed domain name to disrupt the complainant’s business by offering related and competing services evinces bad faith use and registration. See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”)
Complainant also argues that Respondent is using <youtubeplaylist-mp3.com> to intentionally attempt to attract internet users to a website offering related services for commercial gain, thereby creating confusion as to Respondent’s affiliation with Complainant. Bad faith has been found where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000); Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (FORUM May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
As such, the Panel finds that Respondent registered and is using <youtubeplaylist-mp3.com> in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant's rights in the YOUTUBE mark when it registered <youtubeplaylist-mp3.com>. Due to the fame and notoriety of Complainant's mark, it is inconceivable that Respondent did not have actual knowledge Complainant and its rights to the YOUTUBE mark. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had prior knowledge of Complainant’s mark and its rights thereto.
Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <youtubeplaylist-mp3.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 21, 2017
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